Kathy provides offensive and defensive patent analysis, including product mapping, invalidity claim charting, product clearance, pre-acquisition due diligence, directed prosecution based on a target product or licensing agreement, full-scale non-infringement and invalidity opinions of counsel, and Abbreviated New Drug Application (ANDA) Paragraph IV Certification opinions of counsel.
Patent Preparation and Prosecution
Kathy prepares and prosecutes patents, and counsels clients in patent portfolio management and strategy. Her computer science and software-related subject matter experience includes:
- Network protocol technologies
- Artificial intelligence
- Natural language processing
- Virtual/augmented/mixed reality display environments
- Database structure and management
- Garbage collection and memory allocation management
- Block-chain technologies
- Productivity suite application features and functionality
- Graphical user interface features and functionality
Her medical device technology experience includes:
- Acute-care ventilators
- Orthopedic fixation devices
- Spinal implants
- Ultrasound localization marker technologies
- Ultrasound liposuction devices and tools
- Surgical cutting devices and tools
Additionally, she has prosecuted in the chemical field with respect to biofuel production and purification.
Kathy has had repeated success representing clients in post-grant proceedings before the U.S. Patent Trial and Appeal Board (PTAB). Her technologies experience includes remote healthcare monitoring, boron-containing topical pharmaceuticals, particle-enhanced water-permeable textile membranes, and network security.
Active in the community, Kathy volunteers with Girls, Inc. to inspire and support underprivileged girls in the Denver Metro area through mentoring and educational enrichment. She serves on the Girls, Inc. advisory board for Eureka!, a STEM enrichment program.
- Cardiocom LLC v. Robert Bosch Healthcare Sys., Inc., IPR2013-00468, IPR2013-00469 (U.S. Patent No. 7,516,192) (Final Written Decision holding all claims challenged in two petitions unpatentable);
- Coalition for Affordable Drugs X LLC v. Anacor Pharms. Inc., IPR2015-01776, IPR2015-01780, IPR2015-01785 (U.S. Patent Nos. 7,582,621 & 7,767,657) (Final Written Decisions holding all claims unpatentable for both patents challenged in three petitions) (affirmed on appeal, Anacor Pharms., Inc. v. Iancu, Case 2017-1947 (Fed. Cir. May 14, 2018);
- VF Outdoor, LLC v. Cocona, Inc., IPR2018-00190 (U.S. Patent No. 8,945,287) (Final Written Decision holding all claims asserted in litigation unpatentable);
- Cisco Sys., Inc. v. Centripetal Networks, Inc., IPR2018-01443, IPR2018-01444 (U.S. Patent No. 9,137,205) (Both petitions instituted, pending before the PTAB).
Offensive and Defensive Patent Analysis
Kathy has over a decade of experience providing offensive and defensive analyses in the fields of medical device technologies, pharmaceuticals, and computer science and software. Representative projects include:
- Managed a team of attorneys to conduct pre-acquisition due diligence for one of her clients, resulting in the successful acquisition of the company; the project involved reviewing hundreds of patents, clearing seven distinct product lines, advising on product design-around, and delivering twenty opinions of counsel.
- One of a select team of attorneys engaged to assess hundreds of patent claim charts supporting a multimillion-dollar software licensing negotiation involving software, hardware, semiconductor & telecommunications.
- Drafted over 50 claim charts directed to a target product or a licensed technology and performed directed prosecution based thereon.
- Drafted multiple opinions of counsel supporting Paragraph IV Certification for Abbreviated New Drug Applications (ANDAs) in the area of Orange Book pharmaceuticals.
- Conducted clearance investigations for multiple product launches, including reviewing thousands of patents and drafting numerous non-infringement or invalidity opinions of counsel.
Patent Preparation and Prosecution
Kathy has over a decade of experience preparing and prosecuting patents, including broad knowledge of a variety of fields. Kathy also counsels clients in patent portfolio management and strategy. For the past nine years she has managed a large prosecution docket in the medical-device field, including both software-related and mechanical innovations, and for the past four years she has managed a quarter of the firm’s large prosecution docket for a fortune-50 software company.